Ex Parte Fagot

Board of Patent Appeals and Interferences

Apr 25, 2008

10072429 (B.P.A.I. Apr. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JACQUES FAGOT
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Appeal 2007-2403
Application 10/072,429
Technology Center 3700
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Decided: April 25, 2008
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Before WILLIAM F. PATE, III, MURRIEL E. CRAWFORD, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals the rejection of claims 1, 7, 8, 11, 12, 15, and 16.
Claims 3, 4, 6, 9, 10, and 14 stand withdrawn from consideration. Claims 2,
5, and 13 have been canceled. We have jurisdiction under 35 U.S.C. §§ 134
and 6.
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The claimed invention is directed to a golf club head used on the
typical iron-type golf club. Each golf club of a set of golf clubs of the so
called cavity-type has a peripheral wall bounding the rear face of the golf
club head. The upper rear peripheral wall is provided with a series of
recesses which vary from one iron within the set to another iron in the set to
cause the center of gravity of each of the golf club heads to vary in distance
relative to the upper face of the head.
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A set of golf club irons, each iron of said set having a
head, said head having a rear face, said rear face having a cavity
bounded by a plurality of walls, wherein said plurality of walls
comprises at least one lower wall forming a sole and an upper wall,
said upper wall having a plurality of faces, said plurality of faces
comprising a rear face, an upper face, a lower face facing the cavity
and a plurality of lateral faces, wherein said head comprises at least
one recess in the upper wall and said at least one recess opens onto
the rear face of said upper wall, the recess being elongate in the main
direction of the upper wall, and wherein a volume of said at least one
recess inside said upper wall varies from one iron to another within
said set, to cause the center of gravity of each head to vary in distance
relative to said upper face from one iron to another.

The references of record relied upon by the Examiner as evidence of
obviousness are:
Fenton US 5,290,036 Mar. 01, 1994
Daisuke1 JP 7-213656 Aug. 15, 1995
Besnard US 5,643,112 Jul. 01, 1997
Peters US 6,093,112 Jul. 25, 2000

1Hereinafter referred to as JP 7-213656.
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In addition, the Examiner has cited the following patent as evidence of
recognition in the art:
Toulon US 2002/0119828 A1 Aug. 29, 2002
Claims 1, 8, 11, 12, and 16 stand rejected under U.S.C. § 103 as
unpatentable over Peters in view of Besnard.
Claims 7 and 15 stand rejected under 35 U.S.C. § 103 as unpatentable
over Peters in view of Besnard and further in view of JP 7-213656 and
Fenton.

FINDINGS OF FACT
Peters discloses a correlated set of golf clubs. More specifically
Peters is directed to iron-type golf clubs (Peters, col. 1, l. 7). Such golf clubs
are provided in correlated sets which include a large range of clubs (Peters,
col. 1, ll. 40-41). The set of clubs includes clubs with a low loft angle and a
low club number and clubs of a higher loft angle with a higher club number.
It is a goal of the Peters’ invention to provide a set of golf clubs having a
first center of gravity located at a first vertical distance from the ground
plane and clubs in the set with higher club numbers that have a second
center of gravity located a second vertical distance from the ground plane, in
this instance the second vertical distance being longer than the first vertical
distance. (Peters, col. 3, ll. 16-33). With reference to Figure 2 of the Peters
patent, a first club in the set is shown with a low club number and center of
gravity marked CG1. The second club of intermediate club number is
shown with center of gravity CG2 which is higher than CG1. Finally, a third
club of high club number or wedge designation is shown with the center of
gravity CG3 higher still than the center of gravity CG2. Thus Peters is
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recognition in the art that the center of gravity of the club head should vary
upwardly from one iron to another within the set.
Turning to the disclosure of Besnard, Besnard is also directed to a golf
club head for an iron-type golf club. The iron-type club of Besnard is of the
rear cavity-type. (Besnard, col. 1, ll. 17-20). Besnard discloses that it is
important when using enlarged or oversize heads in the cavity-type iron to
adjust the center of gravity of the golf club head by removing mass from the
upper portion of the peripheral edge toward the toe (Besnard, col. 2, ll. 27-
36). Thus, Besnard is a teaching that the center gravity of a golf club may
be adjusted by adding and removing mass, i.e., providing a recess in the
upper portion of the peripheral edge or upper wall. It is further noted that
some embodiments of Besnard rely on a number of recesses rather than a
single elongated recess. See, for example the embodiments of Figures 9 and
10 which show, what is in actuality, three discrete recesses in the upper wall.
The Examiner has cited JP 7-213656 to show that it is known in the
art to mount impact absorbing material on the top edge of the back of the
iron to promote feel. Fenton has been cited to disclose an impact absorbing
material placed in the recess on the back of the iron wherein the material is
polyurethane. Fenton states that this is to have softness and elasticity to
create a substantial lessening of vibration.
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PRINCIPLES OF LAW
A claimed invention is unpatentable if the differences between it and
the prior art are “such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct.
1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14
(1966).
In Graham, the Court held that that the obviousness analysis is
bottomed on several basic factual inquiries: “[(1)] the scope and content of
the prior art are to be determined; [(2)] differences between the prior art and
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill
in the pertinent art resolved.” 383 U.S. at 17. See also KSR, 127 S.Ct. at
1734. “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR at 1739.
“When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or in a different one. If a person of ordinary skill in the art can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 1740.
“For the same reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” Id.
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“Under the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the elements in the manner claimed.” Id. at 1742.

When there is a design need or market pressure to
solve a problem and there are a finite number of
identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this
leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and
common sense. In that instance the fact that a
combination was obvious to try might show that it
was obvious under § 103.
KSR, 127 S.Ct. at 1742.

ANALYSIS
We will affirm the rejections of claims 1, 7, 8, 12, 15, and 16 and
reverse the rejection and enter a new ground as to claim 11 on appeal.
Claims 7 and 15 have not been separately argued and fall with claim 1 from
which they depend.
In our view, Peters clearly discloses the desirability of shifting the
center of gravity of an iron golf club from lower to higher as the club
number increases. Besnard, on the other hand, discloses that the center of
gravity of a club can be shifted by removing material or adding a recess in
the top peripheral portion around the back of a cavity iron. The method of
moving the center of gravity disclosed in Besnard is merely one choice from
a finite number of identified practical solutions which would have a
reasonable expectation of success. It therefore renders the subject matter of
the claims on appeal obvious to try. See KSR at 1742. In our view, Peters
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discloses what to do, i.e., move the center of gravity upwardly as the iron
number increases. Besnard discloses how to do it, by remove material or
providing recesses in the upper peripheral wall that surrounds the cavity on
the back of the iron club. This is simply combining prior art elements
according to known methods to yield a predictable result. See KSR at 1739.
Appellant on pages 6 and 7 of the Brief argues that there are features
that Peters does not have. This is merely an individual attack on the
reference when the rejection is based on a combination of references.
Appellant argues that Peters teaches attaching weighted inserts to the lower
perimeter region of the cavity back. While this is true it does not militate for
the reversal of the rejection. Appellant appears to overlook the fact that the
weighed insert is added to move the center of gravity down, and the clubs of
the set that do not have the weighted insert have a higher center of gravity as
the club numbers increase. This is the teaching of Peters that is relied upon
by the Examiner. On page 8 of the Brief, Appellant argues that Besnard
does not vary recess volume among clubs in a set. We agree that Besnard is
not concerned with a set. However, Besnard shows how to vary the center
of gravity of a cavity-type iron golf club by removing mass or providing
recesses in the top peripheral surface. Thus, Besnard teaches a known
technique in the art to accomplish the desired goal of the Peters patent.
Also on page 8 of the Brief, Appellant argues that there is no teaching
or suggestion to combine the references. However in KSR, the Supreme
Court held that a rigid application of such a mandatory formula as teaching,
suggestion, or motivation was incompatible with its precedent concerning
obviousness. See KSR at 1741.
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With respect to the limitation in claim 8, column 4 of Besnard is
difficult to interpret. However it appears that lines 26-34 discuss the gain in
mass of the lower portion of the club head by the provision of the elongated
recesses 3 in the top peripheral edge. That is, while the mass of the club
head remains constant, on the order of 230g to 300g, the lower part of the
club head can be increased from 3g to 15g due to the material removed with
respect to the recess on the top edge. According to the Besnard this moves
the center of gravity in the vertical direction from 0mm to 2mm up and
down. Assuming the club head is of a material of constant density, if 3g of
material are removed from the recess and placed on the lower portion of the
club head of a club weighing 300g, the volume of the recess would equal
approximately 1% of the volume of the head. This lies within the range
claimed in claim 8.
Turning to claim 12, the claim requires not only that the volume of
said at least one recess decreases as the set is varied from one club to another
as required by claim 1, but also that the number of recesses decrease at the
same time. In our view Besnard is suggestive of three ways to move the
center of gravity upwardly in the club head by increasing mass in the upper
wall. One, the number of recesses might be reduced with each recess being
of the same volume. Two, the volume of each recess might be reduced
keeping the number of recesses constant. And three, both the number and
volume of the recesses might be reduced to vary the volume of material in
the upper wall. Thus, it can be seen that there is a finite number of
identified, predictable solutions with a reasonable expectation of success as
to how the mass in the upper wall might be varied by one of ordinary skill.
Accordingly, it can be seen that one of ordinary skill has good reason to
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pursue the limitation of claim 12 as obvious to try under the rationale
articulated by the Supreme Court in KSR. See KSR at 1742.

REJECTION UNDER 37 C.F.R. § 41.50(b)
All words in a claim must be considered in judging the patentability of
that claim against the prior art. If no reasonable, definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious – the claim becomes indefinite. See In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970). Our analysis of the claims indicates that considerable
speculation as to meaning of terms employed in claim 11 needs to be made.
Rejections under 35 U.S.C. § 103 should not be based on speculations and
assumptions. In re Steele, 305 F.2d 859, 862 (CCPA 1962); Ex parte Head,
214 USPQ 550, 551 (Bd. App. 1981). Accordingly, we reverse the 35
U.S.C. § 103 rejection of claim 11 and enter the rejection noted herein
below. It must be noted, however, that this is a technical reversal based on
the indefiniteness of the subject matter and is not to be construed as a
reversal based on the prior art cited by the Examiner.
Claim 11 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. It is unclear whether the claim expression “volume of all recesses
decreases” means the volume of each and every recess on the long irons is
smaller than the recess on the short irons or all the recesses taken
collectively result in a decreasing volume from the long irons to the short
irons.
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CONCLUSION AND ORDER
The rejections of claims 1, 7, 8, 12, 15, and 16 are affirmed. The
rejection of claims 11 is reversed. A new rejection pursuant to our authority
under 37 C.F.R. § 41.50(b) has been entered against claim 11.
Regarding the affirmed rejection(s), 37 .C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
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the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART - 37 C.F.R. § 41.50(b)

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